Mycoskie, LLC v. ChaussuresToms.com
Claim Number: FA1212001477184
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is ChaussuresToms.com (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chaussurestoms.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2012; the National Arbitration Forum received payment on December 28, 2012.
On December 26, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chaussurestoms.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@chaussurestoms.com. Also on December 28, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant has registered the TOMS trademark with the United States Patent and Trademark Office (“USPTO”) numerous times (e.g., Reg. No. 3,353,902 registered February 16, 2006).
ii. Complainant also owns federal common law rights in the use of the TOMS trademarks.
iii. Respondent registered the <chaussurestoms.com> domain name on March 17, 2012.
iv. The second portion of the disputed domain name is identical to Complainant’s TOMS mark. The first portion is merely a generic descriptor of the product (“chaussures” is the French word for “shoes”), and is insufficient to avoid the likelihood of confusion, especially when the shared component is the “dominant portion” of the domain name, as it is here.
v. Respondent is using the disputed domain name to sell goods alleged to be legitimate TOMS shoes, which appear identical but are in fact counterfeit. This adds to the confusing nature of the disputed domain name.
vi. Even if consumers were not confused about the source of the goods after being directed to the site, the “initial interest confusion” is still harmful to Complainant.
i. Respondent has made no bona fide use of the <chaussurestoms.com> domain name. Respondent’s use appears to be a willful attempt to trade on the goodwill and reputation of Complainant’s TOMS products. Additionally, Respondent has only ever used the disputed domain name to offer counterfeit TOMS goods.
ii. Respondent has not been commonly known by the domain name.
iii. Respondent has not made a legitimate or fair use of the domain name, but is operating as a counterfeiter and/or phishing site operator.
i. Respondent has registered and used the <chaussurestoms.com> domain name to disrupt the business of Complainant, and to attract Internet traffic to Respondent’s Website by intentionally creating confusion with Complainant’s marks.
ii. By offering and advertising exactly the same kind of goods as Complainant sells under its protected TOMS mark, it is clear that Respondent is attempting to divert business and customers from Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its TOMS mark.
2. Respondent’s <chaussurestoms.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the TOMS trademark pursuant to Policy ¶ 4(a)(i) based on its registration of the mark with the USPTO (e.g., Reg. No. 3,353,902 registered February 16, 2006). See Complainant’s Exhibit B. The Panel notes that previous panels have found that a complainant’s registration of a mark is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). Accordingly, the Panel finds that Complainant has established rights in the TOMS mark for the purposes of Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. Further, the Panel notes that UDRP precedent has established that a complainant does not need to own a trademark registration in the country of a respondent in order to establish rights in its mark under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant claims that Respondent’s <chaussurestoms.com> domain name is identical or confusingly similar to Complainant’s TOMS trademark under Policy ¶ 4(a)(i). Complainant notes that the disputed domain name uses Complainants trademark in its entirety, with only the addition of the generic descriptive term “chaussures” (“chaussures” is the French word for “shoes,” the primary product sold by Complainant). Because past panels have found that the addition of a non-distinctive, generic term is insufficient to avoid a finding of confusing similarity, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). The Panel also notes that past panels have considered generic top-level domains (“gTLDs”) irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the TOMS mark. The Panel notes that although the disputed domain name’s registrant information identifies “ChaussureToms.Com” as the registrant, previous panels have found such a match insufficient to show that a Respondent was commonly known by a mark. See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”). In the absence of other evidence that Respondent is commonly known by the disputed domain name, the Panel finds that Respondent has not demonstrated rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant also claims that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant contends that Respondent is using the <chaussurestoms.com> domain name to sell counterfeit versions of Complainant’s TOMS products. See Complainant’s Exhibit D. Because previous panels have found that the sale of counterfeit versions of Complainant’s products is evidence of a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use, the panel finds that Respondent has not demonstrated rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Complainant alleges that Respondent has registered and used the <chaussurestoms.com> domain name in bad faith to disrupt the business of Complainant pursuant to Policy ¶ 4(b)(iii), by selling counterfeit products on a domain name that is confusingly similar to Complainants TOMS trademark. The Panel notes that previous panels have found the sale of counterfeit products is disruptive and is evidence of bad faith. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). The Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant similarly contends that Respondent registered the disputed domain name to attract Internet users to its website by creating confusion with Complainant’s mark, as evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Based on precedent from past panels acknowledging this type of usage as bad faith, the Panel finds that Respondent is using the disputed domain name to commercially benefit from confusion with Complainant’s mark, and further finds such use to be evidence of bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chaussurestoms.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 8, 2013
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